Legal Updates

3D shape mark rejected for technical function

The hearing officer has rejected an application to register a 3D mark based on the shape's technical function, highlighting the clear public interest of preventing the unjustifiable extension of patent rights.

Read more

Coca-Cola victory as Federal Court refuses to register colour green for energy drinks

In opposition proceedings between Coca-Cola and Frucor, the Federal Court of Australia has confirmed that Frucor could not register a particular shade of the colour green as a mark for energy drinks.

Read more

General Court: consumers usually recognise wine by reference to word element

The EU General Court has confirmed that there was a likelihood of confusion between the word mark ANTONIO RUBINI and the earlier figurative mark RUTINI, which both covered wine.

Read more

Why it is very difficult to recover domain name consisting of three-letter acronym under UDRP

A UDRP panel has refused to order the transfer of a domain name consisting of a three-letter acronym without addressing whether the complainant had unregistered trademark rights under the same acronym.

Read more

Namibia introduces new Industrial Property Act – what you need to know

Namibia’s new Industrial Property Act will come into operation on 1 August 2018. This update highlights the most noteworthy changes concerning trademarks.

Read more

UK government White Paper on future UK-EU relationship: small number of IP issues considered

The UK government’s White Paper on the future UK-EU relationship includes a limited number of proposals relating to intellectual property. Among other things, the United Kingdom will establish its own GI scheme.

Read more

CJEU dismisses Jägermeister's appeal in RCD application dispute

The decision of the Court of Justice of the European Union in Jägermeister v EUIPO highlights the strict standard in relation to the representation requirements in applications for registered Community designs.

Read more

Court of Appeal upholds criminal sentence for import of counterfeit t-shirts bearing registered trademarks

The Court of Appeal of Zaragoza in Spain has upheld a judgment of the Trial Court in which the latter had sentenced the defendants for importing thousands of counterfeit t-shirts from China.

Read more

Full Federal Court considers nature of appellate review in cases involving evaluative assessments

In Aldi Foods v Moroccanoil, the Full Federal Court of Australia has considered the approach that should be adopted when it is called upon to consider mixed questions of fact and law.

Read more

Beware of RDNH: UDRP panel finds that complainant deliberately filed complaint without proper basis

A UDRP panel has denied the transfer of a domain name that matched the complainant’s trademark and declared that the complaint constituted an abuse of the UDRP proceeding.

Read more

Fifth Circuit: keep your claws off THE KRUSTY KRAB

In a case regarding the Krusty Krab restaurant from SpongeBob SquarePants, the US Court of Appeals for the Fifth Circuit has confirmed that a specific element from a television series can receive trademark protection.

Read more

CJEU's EUIPO v Puma decision: mark owners may rely on earlier decisions as evidence of earlier mark's reputation

The CJEU has found that previous decisions issued by the EUIPO and at national level may be validly relied on as a means of evidence of the reputation of an earlier mark.

Read more

Can ear plugs tune out colour? Bright green colour for ear plugs not functional

In a case involving competing producers of foam ear plugs, the US Court of Appeals for the Ninth Circuit has held that there remained a dispute of material fact as to whether the bright green colour is functional for ear plugs.

Read more

UDRP panel refuses to transfer domain name consisting of common surname

A UDRP panel has refused to order the transfer of a domain name that matched the complainant’s mark because the complainant failed to prove that the respondent registered and used the domain name in bad faith.

Read more

Albania introduces new trademark regulation – what you need to know

A new trademark regulation has entered into force in Albania, clarifying a range of issues raised by the changes to the Industrial Property Law introduced in March 2017.

Read more

General Court finds likelihood of confusion between FRANCE.COM and French Republic's earlier FRANCE mark

The EU General Court has confirmed that there was a likelihood of confusion between US company France.com Inc’s FRANCE.COM mark and the French Republic’s earlier FRANCE mark.

Read more

Federal Circuit: TTAB applied wrong test in finding Coca-Cola’s ZERO mark not generic for soft drinks

The US Court of Appeals for the Federal Circuit has vacated a decision of the TTAB, holding that the latter had "asked the wrong question" in determining the genericness of Coca-Cola’s ZERO mark.

Read more

A380 decision: Supreme Court clarifies distinctiveness threshold for plain character marks

The Thai Supreme Court has held that Airbus SAS’s mark A380 is distinctive under the Trademark Act, finding that the letter ‘A’ stands for ‘Airbus’.

Read more

easyGroup versus EasyFly: not an 'easy' case

easyGroup, which is currently engaged in litigation against Colombian airline EasyFly, has failed to comply with an injunction in trademark infringement proceedings initiated by EasyFly.

Read more

General Court rejects Deutsche Post opposition on grounds of low similarity

The EU General Court has confirmed that there was no likelihood of confusion between the figurative mark INPOST and Deutsche Post’s earlier marks POST, EPOST and INFOPOST.

Read more

General Court declines to give three cheers to Staropilsen

In a case involving competing Czech breweries Staropilsen and Staropramen, the EU General Court has confirmed that the trademark STAROPILSEN is invalid.

Read more

Tencent v Monster Energy decision: partial oppositions unlikely to be allowed

The decision of the Intellectual Property Office of Singapore in Tencent v Monster Energy sheds some light on whether partial oppositions are allowed under the Trademarks Act.

Read more

A case of the emperor having very few clothes: descriptive word marks dressed up as logos likely to receive very thin protection

The EU General Court has upheld a decision of the Second Board of Appeal of the EUIPO in relation to seven out of eight identified groups of goods on the basis that the logo mark 3D was descriptive...

Read more

Eighth Circuit: phonetically identical description of competing dog bags does not necessarily cause confusion

In a case involving competitors in the dog bag market, the US Court of Appeals for the Eighth Circuit has affirmed a summary judgment finding that no evidence had been presented from which a jury could infer that...

Read more

Higher Court: imitating the appearance of a restaurant constitutes unfair competition

In a significant decision, Slovenia’s Higher Court has, for the first time, granted protection to the trade dress of a restaurant based on unfair competition.

Read more

General Court's POLO decision highlights additional protection that marks derive from being well known

The EU General Court has confirmed that there was a likelihood of confusion between the mark HPC POLO and The Polo/Lauren Company LP’s earlier mark POLO in Classes 18 and 25.

Read more

Victory for Dior as Supreme People's Court overturns previous decisions on 3D mark for shape of J’adore perfume bottle

The Supreme People’s Court of China has overturned decisions finding that the shape of Dior’s J’adore perfume bottle lacked inherent distinctiveness and that Dior had failed to prove that the mark had acquired...

Read more

General Court finds no likelihood of confusion between pharma marks with same suffix; annuls Board of Appeal decision

The EU General Court has annulled a decision of the Board of Appeal of the EUIPO finding that there was a likelihood of confusion between Tillotts' XENASA mark and Ferring’s earlier PENTASA mark in Class...

Read more

What constitutes genuine use of a EUTM? General Court provides guidance in DOLFINA case

The EU General Court has upheld a decision of the EUIPO in which the latter had revoked the mark DOLFINA on the grounds of non-use for t-shirts and caps in Class 25.

Read more

Implementation of new standard condition on trademarks: what rights holders should know

The Kuwaiti Trademark Office has started to apply a new condition to all marks consisting of two or more elements. Although the practical impact of this condition is likely to be low, it nevertheless creates some concerns.

Read more

First registered Mozambican GI: the rise of GIs in Sub-Saharan Africa

The Mozambican goat market has recently obtained a registration for the 'Tete goat' as GI. This is the first registered Mozambican GI and a milestone in the history of the nation.

Read more
Close

Register for more free content

  • Read more World Trademark Review blogs and articles
  • Receive the editor's weekly review by email
Register now  
Issue 74
;